IGT

Patent Trials and Appeals BoardMay 26, 2021

2020005416 (P.T.A.B. May. 26, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/377,516 12/13/2016 Dwayne R. Nelson 027438-2184 P001519-007 7195 29159 7590 05/26/2021 Neal, Gerber & Eisenberg LLP (IGT) 2 N. LaSalle Street Suite 1700 Chicago, IL 60602-3801 EXAMINER LIM, SENG HENG ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 05/26/2021 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): amasia@ngelaw.com ipusmail@ngelaw.com patents@igt.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DWAYNE R. NELSON, STEVEN G. LEMAY, JIM A. VASQUEZ, and SCOTT T. GOWIN Appeal 2020-005416 Application 15/377,516 Technology Center 3700 Before CHARLES N. GREENHUT, MICHELLE R. OSINSKI, and BRANDON J. WARNER, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–24. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter NEW GROUNDS OF REJECTION. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as IGT. Appeal Br. 3. Appeal 2020-005416 Application 15/377,516 2 CLAIMED SUBJECT MATTER The claims are directed to a virtual ticket-in and ticket-out on a gaming machine. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An electronic gaming machine comprising: a display device; at least one processor; and at least one memory device which stores a plurality of instructions, which when executed by the at least one processor, cause the at least one processor to: wirelessly receive, from a mobile device, data associated with an account maintained by a server of a gaming property cashless system which is accessed via a gaming establishment digital wallet mobile device application of the mobile device, wherein the account is maintained independent of the mobile device and the account is maintained independent of the gaming establishment digital wallet mobile device application of the mobile device, request an amount of funds from the account, said amount of funds being determined in association with the gaming establishment digital wallet mobile device application of the mobile device, and responsive to the requested amount of funds being approved for transfer by the server of the gaming property cashless system: cause a modification of a credit balance of the electronic gaming machine based on the requested amount of funds, and cause the display device to display the credit balance. Appeal 2020-005416 Application 15/377,516 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Lahiri US 2003/0055785 A1 Mar. 20, 2003 Arezina US 2010/0227670 A1 Sept. 9, 2010 Anderson US 2013/0130778 A1 May 23, 2013 REJECTION Claims 1–24 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lahiri, Anderson, and Arezina. Final Act. 4. OPINION Indefiniteness under 35 U.S.C. §112, second paragraph. We enter a new ground of rejection for claims 1–24 for failing to meet the definiteness requirement under 35 U.S.C. §112, second paragraph. Claims 1, 8, and 15 recite the limitation “wherein the account is maintained independent of the mobile device and the account is maintained independent of the gaming establishment digital wallet mobile device application of the mobile device.” In discussing the rejection of the claims, the Examiner states: The financial account (e.g. bank account, credit account or gaming account of a gaming property cashless system) is maintained independent of the mobile device because the mobile device merely maintains the e-wallet application on the mobile device and the account is maintained independent of the gaming establishment digital wallet application of the mobile device because the e-wallet application only acts as a middle medium linking the user’s financial account. Fundamentally, the financial account is maintained by its respective financial institution. Ans. 5. Appeal 2020-005416 Application 15/377,516 4 This interpretation of the limitation would fit with how one would expect a person of ordinary skill in the art to interpret the claim limitation: That an account is maintained by the institution that the account is held with, and the mobile device and application are only used to access the account for information and to initiate transfers of funds. However, in the Reply Brief, Appellant refutes the Examiner’s proposed interpretation of the claim, arguing: This is in contrast to claim 1 wherein the gaming property cashless system maintains the account and the electronic gaming machine requests and receives funds directly from the gaming property cashless system, without the mobile device acting as a middle medium. Reply Br. 5. Further, this argument would seem to contradict the claim limitation: “request an amount of funds from the account, said amount of funds being determined in association with the gaming establishment digital wallet mobile device application of the mobile device” later recited in the same claims. This contradiction raises questions. How can the mobile device not be acting as a middle medium for the request and transfer of funds if the amount of funds is determined in association with the application of the mobile device? What does “independent” of the application and mobile device mean if the application and mobile device are being used as part of the request for funds? What actions are included in “maintain[ing]” the account? The original disclosure does not provide answers to any of these questions. The claim limitation “wherein the account is maintained independent of the mobile device and the account is maintained independent of the gaming establishment digital wallet mobile device application of the mobile Appeal 2020-005416 Application 15/377,516 5 device” recited in claims 1, 8, and 15, does not appear to have support in the original disclosure, making it difficult to properly interpret the meaning of this limitation in light of the disclosure. See, e.g., MPEP § 608.01(g) (“The description is a dictionary for the claims and should provide clear support or antecedent basis for all terms used in the claims.”) Additionally, this limitation conflicts with the later recited step “request an amount of funds from the account, said amount of funds being determined in association with the gaming establishment digital wallet mobile device application of the mobile device.” Appellant has argued that the account is maintained and funds are requested without the application or mobile device acting as a middle medium, but the later recited step states that request of funds requires the use of the application and mobile device. As the scope of the phrase “maintained independent” cannot be determined and the limitation conflicts with a later step, the claims are indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention. Written Description Requirement under 35 U.S.C. §112, first paragraph. We also enter a new ground of rejection for Claims 1–24 for failing to meet the written description requirement under 35 U.S.C. §112, first paragraph. The limitation “wherein the account is maintained independent of the mobile device and the account is maintained independent of the gaming establishment digital wallet mobile device application of the mobile device” recited in claims 1, 8 and 15 did not appear in the originally filed claims. The limitation was added by amendments on April 5, 2018 and September Appeal 2020-005416 Application 15/377,516 6 11, 2018, citing support in paragraph [0038] of the printed publication. Paragraph 38 recites, in its entirety: Wireless interface 18 can be also used to accept information from a digital wallet application, such [as] an E-Wallet application. E- wallets can store passwords, credit card numbers, email contacts and identification data like driver’s license or social security numbers. In some instances, an E-wallet can be linked to a bank account. In the embodiments described herein, an E-wallet application can be used to transfer “cash” electronically to an EGM [(electronic gaming machine)] that can be used for wagers. When funds are received electronically, such as via an E-wallet transaction, the EGM 2 can be configured to store an electronic record of the transaction in a manner similar to cash transactions involving physical currency. Neither this paragraph, nor the remainder of the original disclosure, discusses that an account is maintained independent of the mobile device or maintained independent of the gaming establishment digital wallet mobile device application of the mobile device. The original disclosure does not use the term “maintained” with respect to an “account.” The disclosed functions associated with an account appear to be: store passwords, credit card numbers, email contacts, identification data; link to bank account; and redeem and transfer funds. Spec. ¶¶ 38, 163, 184, 223, 235. However, in nearly every disclosure of one of these functions, they are performed in conjunction with a mobile device or an application on the mobile device. The original disclosure does not disclose any activity as being independent of the mobile device or application. The long list of paragraphs cited by Appellant in the Appeal Brief (Appeal Br. 6) as supposedly providing support for this subject matter is no more enlightening. The Examiner did not raise a 35 U.S.C. §112, first paragraph, rejection when the limitations were added. The Examiner instead appears to Appeal 2020-005416 Application 15/377,516 7 have speculated as to the meaning of this language as discussed above in the context of the definiteness issue. Because the original disclosure does not provide adequate support to demonstrate Appellant was in possession of the subject matter “wherein the account is maintained independent of the mobile device and the account is maintained independent of the gaming establishment digital wallet mobile device application of the mobile device” recited in claims 1, 8, and 15, we reject these claims, and those claims depending therefrom, as failing to comply with the written description requirement. Obviousness under 35 U.S.C. §103(a). We do not reach the merits of the rejection under 35 U.S.C. § 103(a) at this time. Before a proper review of the rejection under 35 U.S.C. § 103(a) can be performed, the subject matter encompassed by the claims on appeal must be reasonably understood without resort to speculation. Because the claims fail to satisfy the requirements of the second paragraph of 35 U.S.C. § 112 we are constrained to reverse, pro forma, the rejection under 35 U.S.C. § 103(a). See, e.g., In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language.); see also In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“If no reasonably definite meaning can be ascribed to certain terms in the claim, the subject matter does not become obvious—the claim becomes indefinite.”). Appeal 2020-005416 Application 15/377,516 8 CONCLUSION For the foregoing reasons, pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims 1, 8, and 15, and those claims depending therefrom, as failing to comply with 35 U.S.C. §112, first paragraph and second paragraph. The Examiner’s obviousness rejection is reversed without reaching the merits thereof. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1–24 103(a) Lahiri, Anderson, Arezina 1–24 1–24 112, first paragraph Written description 1–24 1–24 112, second paragraph Indefiniteness 1–24 Overall Outcome 1–24 1–24 RESPONSE This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: Appeal 2020-005416 Application 15/377,516 9 (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). REVERSED; 37 C.F.R. § 41.50(b)